Ex parte Swartzel, Appeal 1998-2941
| Decision Date | 16 August 1999 |
| Docket Number | 985,Appeal 1998-2941,Application 08/061 |
| Parties | Ex parte KENNETH R. SWARTZEL, HERSHELL R. BALL, JR., and MOHAMMAD-HOSSEIN HAMID-SAMIMI Reexamination Control 90/003, 682 |
| Court | United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board |
Before McQUADE, NASE, and KRATZ, Administrative Patent Judges.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to allow claims 1 to 35 and 46, as amended subsequent to the final rejection. Claims 36 to 45 and 47 have been canceled.
We AFFIRM-IN-PART and enter new rejections pursuant to 37 CFR § 1.196(b).
The appellants' invention relates to a method of ultrapasteurizing a liquid whole egg product (claims 1 to 11 18/1, 18/4, 18/8, 19/1, 19/4 and 19/8), a method of making a packaged liquid whole egg product (claims 12 to 17, 18/12 18/16, 19/12 and 19/16), a packaged liquid whole egg product (claims 20 to 27 and 46/20) and an aseptically packaged liquid whole egg product (claims 28 to 35 and 46/28). A copy of the claims under appeal appears in "APPENDIX A" to the appellants' brief.
The following is a listing of the art of record cited by the examiner in the answer:
(1) Hanson et al. 1946. Journal Paper No. J-1446 of the Iowa Agriculture Experiment Station, Ames, IA. Project No. 811. Pages 277-283.
(Hanson)
(2) Murdock et al. 1960. "The Pasteurization of Liquid Whole Egg." Mon. Bull. Minist. Hlth. Lab. Serv. Vol. 19. Pages 134-152. (Murdock)
(3) Stadelman. 1977. 2nd Edition. Egg Science and Technology. AVI Publishing Co., Westport, CT. Pages 161-186. (Stadelman)
(4) News and Observer newspaper. Raleigh, N.C. "NCSU Researchers Crack the Secret of Long Shelf-Life for Eggs." Published 9/3/85. Page 8A. (News & Observer article)
(5) Food in Canada. 1964. Vol. 24. "Non-Stop Liquid Egg Process Said to Destroy Salmonella." Page 28. (Food in Canada)
(6) Chester-Jensen Company, Inc. publication. "Improved Parallel Flow Plates Maintain Maximum Heat Transfer; Assure Utmost Economy." Pages Kl-3 to Kl-6. February, 1963.
(Chester-Jensen)
(7) Moller-Madsen. "Pasteurization of Egg Products." Sundhedsplejen. Published December 1958. Pages 102-105. (Moller-Madsen)
(8) Winter et al. "Pasteurization of Liquid Egg Products - I. Bacteria Production in Liquid Whole Egg and Improvement in Keeping Quality." Food Research. November, 1946. Pages 229-245. (Winter)
(9) Payawal et al. Food Research. November, 1946. Pages 246-260.
(Payawal)
(10) Abstract concerning Poultry Science Association Annual Meeting. July 29-August 2, 1985. Iowa State University, Ames, IA. (PSA abstract).
(11) Mohammad-Hossein Hamid-Samimi Thesis: Criteria Development for Extended Shelf-Life Pasteurized Liquid Whole Egg. 1984.[3](Hamid-Samimi thesis)
(12) Veerkamp et al. Food Science Technology. Vol. 7. No. 5. 1974. Pages 306-310. (Veerkamp) (13) U.S. Patent No. 4, 511, 589. Padley et al. April 16, 1985. (Padley) (14) Great Britain Patent No. 612, 503. November 15, 1948. (GB 612503) (15) U.S. Patent No. 3, 212, 906. Jones. October 19, 1965. (Jones)
(16) Japan 58-63368. Q. P. Corp. April 15, 1983. (Japan 63368) (17) U.S. Patent No. 2, 936, 240. Kauffman et al. May 10, 1960. (Kauffman)
(18) Egg Pasteurization Manual. U.S. Department of Agriculture, Agricultural Research Service, February 1969.
(Egg Pasteurization Manual) (19) U.S. Patent No. 4, 695, 472. Dunn et al. September 22, 1987, filed May 31, 1985. (Dunn)
(20) Donchev et al., Khranitelna Promishlenost, (1979) 28 (8). FSTA database abstract (AN: 81 (07):Q0091). (Donchev)
(21) U.S. Patent No. 3, 717, 474. Fioriti et al. February 20, 1973. (Fioriti) (22) U.S. Patent No. 4, 333, 959. Bracco et al. June 8, 1982. (Bracco)
The following rejections are before us in this appeal[4]:
(1) Claims 1, 18/1, and 19/1 stand rejected under 35 U.S.C.§ 103(a) as being unpatentable over Hanson taken together with Payawal, Winter, Applicants' own admission, Hamid-Samimi thesis, News & Observer article, PSA abstract and any one of Moller-Madsen, GB 612503, and Jones. In addition, the Egg Pasteurization Manual is cited as an evidentiary showing.
(2) Claims 3-6, 8-10, 12, 14, 15, 18/4, 18/8, 18/12, 19/4, 19/8, and 19/12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the references as applied in (1) above further in view of any one of Stadelman, Chester-Jensen, Food in Canada, and Veerkamp.
(3) Claim 2 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the references as applied in (1) above in view of Padley, and claims 7, 11, 13, 16, 17, 18/16, and 19/16 stand rejected under 35 U.S.C. § 103 as being unpatentable over the references as applied in paragraph (2) above in view of Padley.
(4) Claims 20, 25-28, 33-35, 46/20, and 46/28 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Dunn.
(5) Claims 20, 22, 23, 25-28, 30, 31, 33-35, 46/20, and 46/28 stand rejected under 35 U.S.C. § 102(b) as being anticipated by either one of the News & Observer article or the PSA abstract.
(6) Claims 20, 22-27, and 46/20 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Donchev.
(7) Claims 22-24 and 30-32 stand rejected under 35 U.S.C. § 103 as being unpatentable over Dunn.
(8) Claims 21 and 29 stand rejected under 35 U.S.C. § 103 as being unpatentable over any one of Dunn, the News & Observer article, and the PSA abstract as set forth above (i.e., paragraphs (4)-(6) above) further in view of Fioriti and Bracco.
(9) Claims 3-17, 18/4, 18/8, 18/12, 18/16, 19/4, 19/8, 19/12, 19/16, 28-35, and 46/28 stand provisionally rejected under 35 U.S.C. § 101 as claiming the same invention as that of claims 1, 3-17, 18/1, 18/4, 18/8, 18/12, 18/16, 19/1, 19/4, 19/8, 19/12, 19/16, 28-35, and 46 of copending reissue application No. 07/880, 899.
(10) Claims 20-27 and 46/20 stand rejected under 35 U.S.C. § 112, first paragraph.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the appellants regarding the above-noted rejections, we make reference to the final rejection (mailed September 13, 1996) and the answer (mailed May 21, 1997) for the examiner's complete reasoning in support of the rejections, and to the brief (filed February 12, 1997) and reply brief (filed July 21, 1997) for the appellants' arguments thereagainst.
OPINIONIn reaching our decision in this appeal, we have given careful consideration to the appellants' specification and claims, to the applied prior art references, to the evidence of nonobviousness submitted by the appellants and to the respective positions articulated by the appellants and the examiner. As a consequence of our review, we make the determinations which follow.
Rejections (1), (2) and (3)[5]
We will not sustain the rejection of claims 1 to 19 under 35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 U.S.P.Q.2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is established by presenting evidence that would have led one of ordinary skill in the art to combine the relevant teachings of the references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5 U.S.P.Q.2d 1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013, 1016, 173 U.S.P.Q. 560, 562 (CCPA 1972) .
In this case, all of the examiner's rejections of method claims 1 to 19 are founded on the basis that it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified Hanson's method of pasteurizing liquid whole eggs to have included an aseptical packaging step to extend the shelf life of a refrigerated egg product based on the teachings of the News and Observer article, the PSA abstract and the thesis of Hamid-Samimi, and/or to have pasteurized Hanson's liquid whole eggs as taught by the teachings of Jones, GB 612503 or the Moller-Madsen article. We do not agree with the examiner on this matter. In this regard, it is our opinion that the only suggestion for modifying Hanson in the manner proposed by the examiner stems from hindsight knowledge derived from the appellants' own disclosure.[6] That is, it is our view that one skilled in the art following the teachings of the News & Observer article, the PSA abstract and the Hamid-Samimi thesis to prepare an extended shelf life liquid whole egg product would not have deviated from the specific pasteurizing techniques taught by the News & Observer article, the PSA abstract and the Hamid-Samimi thesis unless provided with sufficient motivation. In this case, it is our determination that the prior art as applied lacks sufficient motivation for an artisan to have done so.
For the reasons stated above, the decision of the examiner to reject claims 1 to 19 under 35 U.S.C. § 103 is reversed.
Rejection (4)
We sustain the rejection of claims 20, 25-28, 33-35, 46/20, and 46/28 under 35 U.S.C. § 102(e) as being anticipated by Dunn.
Initially we note that anticipation by a prior art reference does not require either the inventive concept of the claimed subject matter or the recognition of inherent properties that may be possessed by the prior art reference. See Verdegaal Bros Inc. v. Union Oil Co., 814 F.2d 628, 633, 2 U.S.P.Q.2d 1051, 1054 (Fed. Cir.), cert, denied, 484 U.S. 827 (1987). A prior art reference anticipates the subject of a claim when the reference discloses every feature of the claimed invention,...
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